Thursday, September 06, 2012

The Board affirmed a Section 2(e)(1) refusal of SADORU (Stylized), finding it merely descriptive of "motorcycle parts and accessories, namely motorcycle seats and ergonomic motorcycle pads for use with seats." Applicant did not dispute that "sadoru," which approximates the Japanese word for "saddle," is at least descriptive of the goods. The sole issue before the Board was whether the stylization of SADORU "creates a separate and distinctive commercial impression apart from the word itself, such that the mark as a whole is not merely descriptive." In re Sadoru Group, Ltd., 105 USPQ2d 1484 (TTAB 2012) [precedential]

To decide the issue at hand, the Board applied the "eye-ball" test. It looked to other Board decisions for guidance.

The following five marks were held to be not sufficiently stylized to overcome a distinctiveness refusal:

The following six marks were found registrable, but only upon a showing of acquired distinctiveness; in other words, the stylization was not inherently distinctive:

The following mark was registered on the Supplemental Register, the stylization being considered ordinary and non-distinctive:

On the other hand, these two marks were registered on the Principal Register without a showing of acquired distinctiveness:

Applicant argued that the stylization of its mark is inherently distinctive because "the hand-drawn script creates an impression taken from Japanese ink-style script," giving the mark a "distinctive oriental flavor reminiscent of the ink brush strokes of Japanese (or other Oriental) calligraphy," and creating a mental reference to ancient Japan.

The Examining Attorney provided a sample of Japanese calligraphy, and the Board agreed that Applicant's lettering is "not the same:"

The Board viewed the lettering in Applicant's mark to be "more in the nature of slightly stylized block lettering," and not like the brushstrokes of Japanese calligraphy. The "dip" in the lettering is so minimal as to be insignificant, and the lettering is horizontal, rather than vertical like the calligraphy example.

Applicant submitted several examples of registered stylized marks in arguing its position, but the Board noted, once again, that it is not bound by the actions of Examining Attorneys in other applications, and it further pointed out that the marks that Applicant submitted have more stylization than the instant mark.

The Board concluded that, considering the case law, the stylization of the SADORU mark "does not create a separate and inherently distinctive commercial impression apart from the word itself." It therefore affirmed the refusal under Section 2(e)(1).